Cooper v. Westchester County

• Decision Date: 01 August 1949
• Docket Number: 22-531.,Civ. No. 19-51
• Citation: 85 F. Supp. 589
• Parties: COOPER v. WESTCHESTER COUNTY et al. (two cases).
• Court: U.S. District Court — Southern District of New York

85 F. Supp. 589

COOPER v. WESTCHESTER COUNTY et al. (two cases).

Civ. Nos. 19-51, 22-531.

United States District Court S. D. New York.

August 1, 1949.

COPYRIGHT MATERIAL OMITTED

Morris Kirschstein, New York City, Judah B. Felshin, New York City, of counsel, for plaintiff.

Duell & Kane, New York City, David S. Kane and Andrew G. Hubbard, New York City, of counsel, for defendants.

NEVIN, District Judge (Sitting by Designation).

These are two patent suits. They were tried together. Altogether, five patents are involved. Benjamin Cooper of New York is the patentee and owner of each and all of the patents. In Civil Action No. 19-51, the patents in suit are numbers 2,165,227, 2,166,090 and 2,205,555. In Civil Action No. 22-531, the patents in suit are numbers 2,196,194 and 2,313,627.

Originally an additional patent, No. 2,086,605 (July 13, 1937) was included in Civil Action No. 22-531. That patent, however, was withdrawn from suit by plaintiff before the trial commenced. By stipulation, this withdrawal was made applicable not only to the defendants in this action, but to Automatic Signal Corporation as well. In view of this stipulation, no proofs were offered with respect to this patent, either upon the question of its validity or infringement.

Plaintiff is a manufacturer of electrical equipment for use among others, in connection with the collection of highway tolls at bridges, vehicular tunnels, parkways and the like. The defendants, Westchester County and Westchester Cross County Parkway Authority, maintain and operate toll highways for vehicular traffic.

These suits are against the named defendants for the installation, operation and use of alleged infringing toll registering equipment at Fleetwood Bridge in Westchester County, New York. The toll registering equipment at the Fleetwood Bridge was manufactured and installed by Automatic Signal Corporation, East Norwalk, Connecticut (now Automatic Signal Division, Eastern Industries, Inc.). Automatic Signal Corporation, the manufacturer of the equipment charged to infringe, assumed the defense of these suits.

The five patents in suit may be roughly divided into three groups: (1) The so-called "treadle" patent No. 2,165,227. (2) The three patents, Nos. 2,166,090, 2,205,555 and 2,313,627 relating to "treadle circuits" which cause an electric counter to be actuated and count the vehicle. (3) Patent No. 2,196,194 relating to a "key operated Indentifier". They all relate to toll registering equipment; that is, equipment employed in connection with the registering of tolls for vehicles using a traffic facility such as a bridge, highway, or vehicular tunnel.

Plaintiff claims that the five patents in suit provide a system for automatically registering the tolls in such a way that every vehicle passing through a booth at a toll station makes its own record independently of anything that the toll collector can possibly do; that in this system there always is a permanent record check of the number of vehicles passing through such toll booth and an identification of the operator in each booth to whom those tolls are chargeable, and that moreover, the system includes means to assure its operation even when tampered with, thereby thwarting attempts by operators to put the system out of commission.

Mr. Kelley, plaintiff's expert, testified (Rec. P. 43) that: "The five patents in suit I think are conveniently grouped in terms of the instrumentalities. * * * All of these devices form an integrated system when used together. * * * In the matter that we are concerned with, they form a part of an integrated whole system."

Defendants contend that the five patents in suit do not "provide a system"; that each patent and each claim "stands on its own two legs," counsel for defendants saying in argument that: "Now, it is true that the question of tolls raises a problem, and it is true that the solution offered by Mr. Cooper is doing a job toward solving it. But the question here is whether this contribution that Mr. Cooper made, * * * is a patentable contribution. * * * To answer that question you are thrown back completely on the five individual patents, each by their own selves; and not only are you thrown back on each of the five patents separately, but you are thrown back on each single claim of each patent. * * * Each claim stands on its own two legs, and one claim can be valid and another claim be invalid; one claim can be infringed, another claim can be not-infringed; * * * Obviously, plaintiff in presenting this case and in trying to seize on something to hold on to, picked up this system. * * * If all these claims in this litigation read on a system and recited these elements all in a single claim, * * * if you had the subject matter of these five patents in a single claim so that you have a treadle mechanism and a key identifier and all these things built together and put into a single claim as a system for collecting toll, then there might be some room * * * for an argument * * * but we have got five patents, each that stands on its own."

Plaintiff agrees that each patent and each claim "stands on its own two legs" but in support of plaintiff's assertion that the five patents do "provide a system" counsel for plaintiff makes the following response: "I have spoken of these patents as relating to a system * * * not with the idea that they must be considered together. * * * Now, to this extent I am in agreement with counsel for defendants, namely, that each of these patents and their claims involved in this suit will have to be considered as a separate invention. * * * I do, however, make this point in regard to the use of the word `system,' that underlying all of these five patents is this basic concept of the necessity for the provision of a pedestrian-proof or foot-operated-proof circuit and apparatus as a sine qua non for producing or having anything that will answer the purpose. * * * There is no claim here for a system as such including the key identifier, but there are claims here for a system in which a treadle containing three or four switches, * * * and with a circuit connected thereto, such that only the rolling action of a wheel will operate the counter, and such as cannot be duplicated by the pedestrian. * * * The word `system' is used in the '090 patent (for a `treadle controlled system') in which, in column 1, line 4, it is stated: `An object of this invention is to provide a system of the character described for controlling the operation of an electric counter by passage of a vehicle over a treadle embedded in a roadway.'" (Patent No. 2,313,627 is for a "Treadle-controlled Toll Checking System.")

That each patent and each claim here in issue "stands on its own two legs" there can be no question (nor is any raised by counsel) and they will be so treated and considered by the Court in this Decision.

Some of the patents contain a number of claims. All are not relied upon. The date of each patent and the claims here relied upon in each patent respectively are as follows:

                                               Claims
                Patent No.       Date         Relied on
                ----------       ----         ----------
                2,165,227    July 11, 1939   10, 27 and 28
                2,166,090    July 11, 1939   1, 2, 4, 5, 6
                                             7, 8, 9, 10, 11
                                             and 12
                                             1
                2,205,555    June 25, 1940   1, 5, 7 and 14
                2,313,627    March 9, 1943   13 and 15
                2,196,194    April 9, 1940
                

Plaintiff prays for damages; injunction; an accounting of profits; its court costs and "such other and further relief as this Court may deem equitable and just."

Defendants in their answers challenge the validity of each of the claims in issue of each patent in suit. They deny "each and every allegation" of infringement and ask that the suits "be dismissed with costs to" defendants.

I. Validity.

Patent No. 2,165,227.

Patent No. 2,165,227 (Ex.1-A) is for a "Switch." It has been referred to in this case as the "Treadle Patent." It is stated in the patent that "this invention relates to switches and is particularly directed to a multiple switch treadle forming part of an electric system and adopted to be embedded in a roadway and actuated by the wheels of vehicles passing thereover and the like structure, * * * to provide a treadle * * * comprising at least two switches so arranged that they may be simultaneously and selectively actuated * * * by the wheels of a vehicle passing over said treadle * * * to provide a highly improved process for making a switch * * * provided with metal contact members effectively incorporated into a resilient housing * * * which may be embedded in a roadway and actuated normally to cause a flow of current to an electrically operated member, only by vehicles passing over said treadle and not by pedestrians or by weights placed thereon * * * to provide a treadle * * * comprising a plurality of complementary pairs of contacts, the construction being such that the first pair of contacts may be actuated first and said pair of contacts and a next adjacent pair of contacts thereafter actuated simultaneously, and said second pair of contacts and a next adjacent pair of contacts actuated thereafter simultaneously and so on until the last two pair of adjacent contacts are acuated simultaneously and the last pair of contacts actuated thereafter alone to cause a desired flow of electrical energy to an electrically operated member." Claims 10, 27 and 28 are here in issue.¹

As stated by plaintiff, Cooper's concept of the manner in which the checking of a vehicular count could be freed from pedestrian and other errors was a dual one — it involved the use of a treadle, and of a correlated circuit.

The treadle is in the shape of an elongated rectangle which lies across a traffic lane. It is placed with its longest dimension at right angles to the direction of travel and in such position that the vehicles passing through the lane must roll...